FOR PUBLICATION FILED

UNITED STATES COURT OF APPEALS NOV 14 2022

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

FOR THE NINTH CIRCUIT

SAN ANTONIO WINERY, INC., No. 21-56036

Plaintiff-Appellant, D.C. No. 2:20-cv-09663-GW-KS v.

JIAXING MICAROSE TRADE CO., LTD., OPINION

Defendant-Appellee.

Appeal from the United States District Court for the Central District of California George H. Wu, District Judge, Presiding

Argued and Submitted August 3, 2022 Pasadena, California

Before: Eugene E. Siler,* Consuelo M. Callahan, and Holly A. Thomas, Circuit Judges.

Opinion by Judge H.A. Thomas

* The Honorable Eugene E. Siler, United States Circuit Judge for the U.S. Court of Appeals for the Sixth Circuit, sitting by designation.

SUMMARY **

Lanham Act

The panel vacated the district court’s order denying San Antonio Winery, Inc.’s motion for a default judgment against Jiaxing Micarose Trade Co., Ltd., in an action in which San Antonio asserts claims under the Lanham Act and related state-law claims.

Section 1051(e) of the Lanham Act allows trademark applicants domiciled in foreign countries to designate “a person resident in the United States on whom may be served notices or process in proceedings affecting the mark.” If the foreign- domiciled applicant declines to designate someone, or the designated person cannot be found, the statute provides that the applicant may be served through the Director of the U.S. Patent and Trademark Office (PTO).

San Antonio filed a proof of service in which it stated that it had served Jiaxing through the Director of the PTO. When Jiaxing did not appear to defend itself in the action, the district court clerk granted San Antonio’s request for entry of default, after which San Antonio filed the motion for default judgment in which it asked the district court to issue a permanent injunction. Noting the lack of circuit-level precedent on whether the procedures of Section 1051(e) provide a means of serving defendants in court proceedings, the district court denied the motion on the ground that Jiaxing had not been properly served.

The panel held that the service procedures of Section 1051(e) apply not only in administrative proceedings before the PTO, but also in court proceedings. Because the district court erred in concluding otherwise, the panel vacated the district court’s order and remanded for further proceedings.

** This summary constitutes no part of the opinion of the court. It has been prepared by court staff for the convenience of the reader.

COUNSEL

Jeffrey G. Sheldon (argued) and Katherine M. Bond, Cislo & Thomas LLP, Los Angeles, California, for Plaintiff-Appellant.

Jiaxing Micarose Trade Co. Ltd., Xiuzhou District, Jiaxing City, Zhejiang, China, pro se Defendant-Appellee.

Amanda Lee Mundell (argued) and Daniel Tenny, Appellate Staff Attorneys, Civil Division; Tracy Wilkison, United States Attorney; Brian M. Boynton, Acting Assistant Attorney General; United States Department of Justice, Washington, D.C.; Thomas L. Casagrande, Associate Solicitor; Christina J. Hieber, Senior Counsel for Trademark Policy and Litigation; Farheen Y. Rasheed, Acting Solicitor; United States Patent and Trademark Office; Alexandria, Virginia; for Amicus Curiae United States of America. H.A. THOMAS, Circuit Judge:

The Lanham Act allows trademark applicants domiciled in foreign countries

to designate “a person resident in the United States on whom may be served

notices or process in proceedings affecting the mark.” 15 U.S.C. § 1051(e). If the

foreign-domiciled applicant declines to designate someone, or the designated

person cannot be found, the statute provides that the applicant may be served

through the Director of the U.S. Patent and Trademark Office (PTO). Id.

This case presents a question of first impression in the circuit courts of

appeals: Do the procedures of Section 1051(e) provide a means of serving

defendants in court proceedings affecting a trademark? Or do they apply only in

administrative proceedings before the PTO? We conclude that Section 1051(e)

applies in both court and administrative proceedings. We therefore vacate the

district court’s decision to the contrary and remand for further proceedings.

I.

A.

San Antonio Winery (San Antonio) is a historic Los Angeles winery, best

known for its Stella Rosa brand of wines. The winery has long been owned and

operated by members of the Riboli family. San Antonio has registered the

trademarks RIBOLI and RIBOLI FAMILY, which it has used since at least 1998

to market its wines and other products.

2 Jiaxing Micarose Trade Co., Ltd. (Jiaxing) is a Chinese company that has

sold products using the Riboli name. In 2018, Jiaxing registered the mark RIBOLI

for use in connection with articles of clothing and shoes. In 2020, Jiaxing applied

to register the mark RIBOLI for use with additional types of products, including

wine pourers, bottle stands, containers, cocktail shakers, dishware, and various

other kitchen and household items. Jiaxing’s registrations reflect considerable

overlap with products sold by San Antonio at its wineries and restaurants.

After learning that Jiaxing was using the Riboli name to sell products in the

United States, including through Amazon.com, San Antonio filed suit against the

company in the Central District of California. The complaint asserted claims

against Jiaxing under the Lanham Act for trademark infringement, trademark

dilution, and false designation of origin, as well as related state-law claims. Among

other forms of relief, San Antonio sought an injunction prohibiting Jiaxing from

using the mark RIBOLI in connection with its products, an order cancelling

Jiaxing’s 2018 registration of the RIBOLI mark, and an order either directing

Jiaxing to abandon its 2020 application to register RIBOLI for additional uses or

prohibiting the PTO from granting the application.1

1 After San Antonio filed suit, Jiaxing abandoned its 2020 application to register the mark RIBOLI for use with kitchen and household goods. In 2021, the Trademark Trial and Appeal Board cancelled Jiaxing’s original 2018 registration after San Antonio filed a petition to cancel the registration, and Jiaxing failed to

3 San Antonio’s efforts to serve Jiaxing with process gave rise to this appeal.

B.

Because Jiaxing is a Chinese company, San Antonio’s service of process

was governed by the rules for serving parties abroad. One source of such rules is

Federal Rule of Civil Procedure 4(f).2 Under Rule 4(f), a defendant may be served

abroad by, among other means, “any internationally agreed means of service that is

reasonably calculated to give notice,” including the procedures of the Hague

Convention on the Service Abroad of Judicial and Extrajudicial Documents (the

Hague Service Convention or Convention).

The Hague Service Convention is the principal international agreement

governing service of process. Both the United States and China are parties to the

Convention. Pursuant to Rule 4(f), San Antonio could therefore have attempted to

serve Jiaxing through the procedures set forth in the Convention. In general terms,

this would have required San Antonio to deliver the summons and complaint to a

“Central Authority” designated by the Chinese government, which would then

appear to oppose the petition. Jiaxing thus no longer holds a registration for the RIBOLI mark. 2 Although Rule 4(f), by its terms, applies only to service on individuals, Rule 4(h)(2) provides that corporations domiciled abroad may be served through the procedures of Rule 4(f), with one exception not relevant here.

4 have responsibility for effecting service on Jiaxing. See generally Brockmeyer v.

May, 383 F.3d 798, 801 (9th Cir. 2004).

Concerned with the amount of time it might take to effect service under the

Hague Service Convention, San Antonio instead sought to serve Jiaxing under a

provision of the Lanham Act applicable to foreign domiciliaries who apply to

register a trademark. This provision states that if a trademark applicant “is not

domiciled in the United States the applicant may designate, by a document filed in

the [PTO], the name and address of a person resident in the United States on whom

may be served notices or process in proceedings affecting the mark.” 15 U.S.C.

§ 1051(e). If such a designation is made, then “notices or process may be served

upon the person so designated by leaving with that person or mailing to that person

a copy [of the notices or process] at the address specified in the last designation so

filed.” Id. If, however, “the person so designated cannot be found at the address

given in the last designation, or if the registrant does not designate . . . a person

. . . on whom may be served notices or process in proceedings affecting the mark,

such notices or process may be served on the Director [of the PTO].” Id.

Seeking to avail itself of the service procedures of Section 1051(e), San

Antonio first inquired whether a U.S.-based attorney who had represented Jiaxing

in connection with its trademark applications would accept service on Jiaxing’s

behalf. When that attorney did not respond, San Antonio served the summons,

5 complaint, and accompanying documents on the Director of the PTO. Upon

receiving the documents, the PTO sent Jiaxing a letter confirming that “[p]ursuant

to 15 U.S.C. § 1051(e), service of process in the . . . lawsuit was effectuated”

through service on the Director. The PTO sent Jiaxing copies of the documents and

also placed them in Jiaxing’s trademark registration files.

C.

San Antonio filed a proof of service in which it stated that it had served

Jiaxing through the Director of the PTO. When Jiaxing did not appear to defend

itself in the action, the district court clerk granted San Antonio’s request for entry

of default. After default was entered, San Antonio filed a motion for default

judgment in which it asked the district court to issue a permanent injunction

prohibiting Jiaxing from using the RIBOLI and RIBOLI FAMILY marks.

The district court denied San Antonio’s motion for default judgment on the

ground that Jiaxing had not been properly served. Noting the lack of circuit-level

precedent on whether the procedures of Section 1051(e) provide a means of

serving defendants in court proceedings, the district court followed the decision in

E. & J. Gallo Winery v. Cantine Rallo, S.p.A., 430 F. Supp. 2d 1064 (E.D. Cal.

6 2005), which held that the procedures of Section 1051(e) apply only in

administrative proceedings before the PTO.3

San Antonio asked the district court to certify its order for immediate appeal

under 28 U.S.C. Section 1292(b). The district court granted the request, and we

agreed to accept the interlocutory appeal.

II.

Whether Section 1051(e) provides a means of serving defendants in court

proceedings is a question of law that we review de novo. See United States v.

Pacheco, 977 F.3d 764, 767 (9th Cir. 2020). In answering this question, we follow

well-established rules of statutory construction. “We begin with the statutory text.”

3 The district court acknowledged that district courts across the country were split on this issue. See San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., No. CV-20-9663, 2021 WL 6752252, at *3–4 (C.D. Cal. Apr. 5, 2021); compare Night Owl SP, LLC v. Dongguan Auhua Elecs. Co., No. 2:19-cv-109, 2019 WL 5084162, at *2–3 (M.D. Fla. Mar. 15, 2019) (holding that Section 1051(e) provides a means of service in court proceedings); Haemoscope Corp. v. Pentapharm AG, No. 02 C 4261, 2002 WL 31749195, at *3 (N.D. Ill. Dec. 9, 2002) (same); V & S Vin & Spirit Aktiebolag v. Cracovia Brands, Inc., 212 F. Supp. 2d 852, 854–56 (N.D. Ill. 2002) (same), with Vantone Grp., LLC v. Yangpu NGT Indus. Co., No. 13CV7639, 2016 WL 3926449, at *2–3 (S.D.N.Y. July 15, 2016) (holding that Section 1051(e) applies only in administrative proceedings before the PTO); LA Gem & Jewelry Design, Inc. v. Gold Star Jewellery PVT Ltd., No. CV 14-4807, 2014 WL 10401936, at *3 (C.D. Cal. Aug. 11, 2014) (same); Gallo, 430 F. Supp. 2d at 1072–83 (same); Sunshine Distrib., Inc. v. Sports Auth. Mich., Inc., 157 F. Supp. 2d 779, 787 (E.D. Mich. 2001) (same); Outboard Marine Corp. v. Chantiers Beneteau, 687 F. Supp. 366, 368–69 (N.D. Ill. 1988) (same).

7 United States v. Lopez, 998 F.3d 431, 435 (9th Cir. 2021). If the meaning of the

text is plain, then that is also where we end. Id.

Here, we interpret Section 1051(e), which governs service of notices or

process in “proceedings affecting [a trademark].” 15 U.S.C. § 1051(e). Because

court proceedings are “proceedings,” and because those proceedings can “affect” a

trademark, we conclude that Section 1051(e) provides a means of serving process

in court.

A.

We turn first to the word “proceedings.” The phrase “proceedings affecting

the mark” has been part of the Lanham Act since the statute’s enactment in 1946.

Pub. L. No. 79-489, § 1(d), 60 Stat. 427, 428 (1946). The word “proceedings”

requires no complex interpretation: its plain and ordinary meaning includes

proceedings in court. Indeed, as dictionary definitions from the time of the Lanham

Act’s passage make clear, court proceedings are the prototypical form of legal

proceeding. See United States v. Carter, 421 F.3d 909, 911 (9th Cir. 2005) (“[W]e

follow the common practice of consulting dictionary definitions to clarify

. . . ordinary meaning[].”). The 1933 edition of Black’s Law Dictionary defined the

word “proceeding” as, “[i]n a general sense, the form and manner of conducting

juridical business before a court or judicial officer.” Proceeding, Black’s Law

Dictionary (3d ed. 1933). Similarly, the 1936 edition of Webster’s New

8 International Dictionary of the English Language defined a proceeding as, among

other things, “[t]he course of procedure in an action at law” and “[a]ny step or act

taken in conducting litigation.” Proceeding, Webster’s New International

Dictionary of the English Language (2d ed. 1936). Nothing in the statute suggests

that Congress, in enacting Section 1051(e), intended to depart from the well-

understood meaning of this word.

It is equally clear that court proceedings can “affect” a trademark. From the

time of its enactment, the Lanham Act has granted courts authority to affect

trademarks in various ways, including the power to “determine the right to [a

trademark] registration, order the cancelation of registrations, . . . [and] restore

canceled registrations.” Pub. L. No. 79-489, § 37, 60 Stat. at 440; see also 15

U.S.C. § 1119 (version in effect today). This authority has been exercised. Our

case law is replete with examples of civil cases affecting trademarks. See, e.g.,

CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 634 (9th Cir. 2007)

(affirming the district court’s cancellation of a trademark); Talking Rain Beverage

Co. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (same); see also 5

McCarthy on Trademarks & Unfair Competition § 30:109 (5th ed. Sept. 2022

update).

Actions like the one filed by San Antonio—which sought, among other

things, to cancel the RIBOLI mark registered by Jiaxing in 2018—comfortably fall

9 within the plain and ordinary meaning of the phrase “proceedings affecting the

mark.” These actions are “proceedings,” and their aim is to “affect” a trademark.

Our analysis could end here.

But if we needed another clue to the meaning of Section 1051(e), the

statute’s reference to the service of “notices or process” provides it. “Process”

connotes court proceedings. It refers to “the means of compelling [a] defendant in

an action to appear in court.” Process, Black’s Law Dictionary (3d ed. 1933); see

also Process, Black’s Law Dictionary (11th ed. 2019) (“A summons or writ, esp.

to appear or respond in court.”); 72 C.J.S. Process § 1 (2022 update) (“[I]n a

narrow sense of the term ‘process’ is limited to judicial writs in an action, or at

least to writs or writings issued from or out of a court . . . .”).

The use of the word “process” in Section 1051(e) is particularly significant

because there is no process served in administrative proceedings before the PTO.

Proceedings before the PTO are initiated with “notices” issued by the agency. See,

e.g., 37 C.F.R. § 2.113(a). Were we to construe Section 1051(e) to apply solely to

administrative proceedings, the word “process” would be superfluous.4 Only

4 As would be the provision permitting service upon the Director of the PTO: in a situation where a foreign trademark applicant did not designate a U.S. person to receive service, or that person could not be found, the agency would be required to serve a notice upon itself. See, e.g., 37 C.F.R. § 2.113(a) (providing that administrative proceedings are initiated with notices issued by the agency).

10 “notices” would ever be served. We decline to adopt this interpretation. See City of

Chicago v. Fulton, 141 S. Ct. 585, 591 (2021) (“The canon against surplusage is

strongest when an interpretation would render superfluous another part of the same

statutory scheme.”).

B.

The district courts that have held that Section 1051(e) applies only in

administrative proceedings have relied largely on reasoning that goes beyond the

statutory text. We have considered these points but are not persuaded by them.5

Some courts have found it significant that the language now codified at

Section 1051(e) was enacted as part of Section 1 of the original Lanham Act,

which set forth the process for filing an application for a registered trademark. See

Gallo, 430 F. Supp. 2d at 1074–75. They reasoned that the placement of the

service provision alongside general trademark application requirements—rather

than with other provisions of the Lanham Act that govern court proceedings—

5 Jiaxing did not enter an appearance in this matter and therefore has not provided briefing in opposition to San Antonio’s position. Our review of the novel issue presented in this case has been aided in significant part by the district courts that have previously considered it, and, in particular, by the Eastern District of California’s decision in Gallo, 430 F. Supp. 2d 1064. Although we part ways with the Gallo court’s conclusion that Section 1051(e) applies only in administrative proceedings, we are grateful for its thorough analysis, which enabled us to fully consider both sides of this issue. In a similar vein, we are thankful for the helpful briefing and argument we received from the United States as amicus curiae.

11 “suggests that Congress may have intended the appointment [of the designated

person] to cover only those proceedings concerning the registration of the mark.”

Id. (quoting V & S Vin, 212 F. Supp. 2d at 854).

We think there is a simpler explanation. Unlike the version of the statute in

effect today, which is written in a permissive fashion, the original Lanham Act

required foreign trademark applicants to designate a U.S. person to receive service.

See Pub. L. No. 79-489, § 1(d), 60 Stat. at 428 (providing that a foreign trademark

applicant “shall designate . . . the name and address of some person resident in the

United States on whom may be served notices or process in proceedings affecting

the mark”). It thus makes sense that the designation requirement would originally

have been included with other requirements the applicant had to satisfy at the time

the application was filed.

Other courts have looked to legislative history. See Outboard Marine, 687 F.

Supp. at 368. This history, however, is murky at best. The text of what ultimately

became Section 1051(e) evolved over the course of more than two decades

between 1924, when it was first proposed, and 1946, when the Lanham Act was

finally enacted. See Gallo, 430 F. Supp. 2d at 1076–81 (comprehensively

surveying the drafting history of Section 1051(e)). One early proposal provided

that the designated representative could be served with notices or process in

“proceedings . . . brought under the provisions of this Act or under other laws of

12 the United States”—language which suggests court proceedings. S. 2679, 68th

Cong. § 8 (1924). Some subsequent proposals, however, restricted the applicability

of the designation provision to “proceedings affecting the registration of the trade-

mark,” which perhaps gestures more toward administrative proceedings. E.g., H.R.

6248, 69th Cong. § 8 (1925) (emphasis added).

The important point for our purposes is that neither of these proposals

became law. And there is little in the drafting history concerning the text that

Congress finally enacted. See Gallo, 430 F. Supp. 2d at 1078–79. What we do

know is that the language Congress chose is clear. Nothing in the legislative

history convinces us that we should depart from its plain meaning. See Schroeder

v. United States, 793 F.3d 1080, 1086 (9th Cir. 2015).

Finally, the Gallo court found it notable that other, unrelated statutes contain

service provisions that more clearly state that they apply in both court and

administrative proceedings. See Gallo, 430 F. Supp. 2d at 1082–83. As one

example, the Federal Food, Drug, and Cosmetic Act requires “every manufacturer

offering an electronic product for importation into the United States to designate in

writing an agent upon whom service of all administrative and judicial processes,

notices, orders, decisions, and requirements may be made.” 21 U.S.C. § 360mm(d).

The Gallo court reasoned that because Congress explicitly referenced court

proceedings in the service provisions of other statutes, its failure to do so in

13 Section 1051(e) of the Lanham Act is an indication that Section 1051(e) does not

apply in court. See Gallo, 430 F. Supp. 2d at 1083.

We disagree. Although the use of different language in separate provisions

of the same statute can indicate that the provisions have different meanings, this

presumption “can hardly be said to apply across the whole corpus juris.”6 Antonin

Scalia & Bryan A. Garner, Reading Law, 170–72 (2012). The statutes identified by

the Gallo court have no connection to the Lanham Act—they have nothing to do

with trademarks, or even intellectual property writ large. These statutes are

therefore of little value in determining the meaning of Section 1051(e).7 See United

States v. King, 478 F.2d 494, 504 (9th Cir. 1973) (“The fact that [Congress] used

6 Our entire body of law. 7 If we required reference to another statute to interpret Section 1051(e), the Patent Act would likely be the most relevant. The Patent Act contains a service provision similar to that set forth in Section 1051(e): it permits a “patentee not residing in the United States” to designate a U.S. person “on whom may be served process or notice of proceedings affecting the patent or rights thereunder.” 35 U.S.C. § 293. There is no doubt that the phrase “proceedings affecting the patent or rights thereunder” in the Patent Act includes court proceedings—the Patent Act’s service provision expressly references proceedings in federal district court. See id. (providing that if the patentee declines to designate a person to receive service, “the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs”). That Section 1051(e) contains similar language—referring to “proceedings affecting the mark”— supports our conclusion that it, too, applies in court proceedings.

14 different language to achieve the same result in a totally unrelated statute is

irrelevant.”).

In sum, we see no reason to look beyond the statutory text. Because the

ordinary meaning of “proceedings affecting the mark” includes proceedings in

court, we conclude that the procedures of Section 1051(e) may be used to serve

process in such proceedings.

C.

Our decision today is not in conflict with the Hague Service Convention.8

The Convention’s procedures apply only when the method of service at issue

“require[s] the transmittal of documents abroad.” Volkswagenwerk

Aktiengesellschaft v. Schlunk, 486 U.S. 694, 700 (1988); see also id. at 704. When

the law of the forum state permits service through means that do not require the

international transmittal of documents, the Convention is not triggered. Id. at 706–

08 (holding that a state law permitting a foreign corporation to be served

domestically through its U.S. subsidiary did not implicate the Hague Service

Convention).

8 Our decision is also not in conflict with Rule 4, which expressly contemplates that Congress might create alternative service procedures like those contained in Section 1051(e). See Fed. R. Civ. P. 4(h) (setting forth rules for serving a corporation that apply “[u]nless federal law provides otherwise”).

15 Service under Section 1051(e) occurs domestically and thus falls outside the

scope of the Convention. The statute presents trademark applicants with a choice:

either designate a U.S. person to be served with notices or process, or submit to

service through the Director of the PTO. In each case, service occurs within the

United States, without the international transmittal of documents.

It is of no moment that the recipient of the served documents—the

designated U.S. person or the Director of the PTO—might ultimately send them to

a defendant domiciled in a country that is a signatory to the Convention. As the

Supreme Court explained in rejecting a similar argument, once service on the U.S.

recipient is valid and complete, “[the] inquiry ends and the Convention has no

further implications.”9 Id. at 707; accord Night Owl, 2019 WL 5084162, at *3

(holding that service on the Director of the PTO under Section 1051(e) does not

implicate the Hague Service Convention).

9 Of course, under the Due Process Clause, foreign defendants remain entitled to “notice reasonably calculated, under all the circumstances, to apprise [them] of the pendency of the action and afford them an opportunity to present their objections.” Schlunk, 486 U.S. at 705 (quoting Mullane v. Cent. Hanover Bank & Tr., 339 U.S. 306, 314 (1950)). We do not foreclose the possibility that a defendant may be able to establish, under the circumstances of a given case, that service under Section 1051(e) failed to provide constitutionally adequate notice. Here, however, the district court did not rely on a lack of notice to Jiaxing as a reason for denying default judgment. We therefore do not address this point further.

16

III.

We hold today that the service procedures of Section 1051(e) of the Lanham

Act apply in court proceedings. The district court erred in concluding otherwise.

Because the district court denied default judgment on this threshold ground, it did

not consider the merits of San Antonio’s default judgment motion. We therefore

vacate the district court’s order and remand for it to consider the remaining issues

in the first instance.

VACATED; REMANDED.10

10 Costs on appeal are awarded to San Antonio.

17